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Sunday, April 22, 2012

Is India “First to File” or “First to Invent”?

I am sure the title of the post must
be really annoying because it goes without saying that the Indian Patents Act
follows the “first to file” rule...or does it?

One of the things that a
litigator’s training teaches you is that, no matter how pedantic it may seem,
interpretation of the law must not be based on what people think or assume, but
must be solidly grounded in what the statute says, which is further backed by
logic and common sense.

Obviously I don’t mean even
absurdities which are supported by the letter of the law must be taken
seriously. What I mean is that the letter of the law must be given its due, and
the enquiry must begin with the wording of the provision, as opposed to a pre-conceived
notion of what we think the law is, or ought to be. At least this is how one
must approach a legislation from a litigation perspective.

If I had to apply this
proposition to the issue at hand, I ought to look at Section 6 of the Act
before I make up mind on the position of Indian law:

6. Persons
entitled to apply for patents

(1) Subject to the
provisions contained in section 134, an
application for a patent for an invention may be made by any of the following
persons, that is to say,—

(a) by any person claiming to be the true and first inventor
of the invention;

(b) by any person
being the assignee of the person claiming to be the true and first inventor in
respect of the right to make such an application;

(c) by the legal
representative of any deceased person who immediately before his death was
entitled to make such an application.

(2) An application
under sub-section (1) may be made by any of the persons referred to therein
either alone or jointly with any other person.

Section 6 governs the entitlement
of a person to file an application for a patent. The provision says that “any
person claiming to be the true and first inventor of the invention” may file an
application for a patent. The provision uses both “true” and “first”, in
that order. This means the person must have invented the invention by himself
(or by themselves in case there are several inventors) without being “inspired”
by the efforts of another person.

The second condition is that the
person must also be the “first one to truly invent” the invention. Nowhere does
the provision seem to convey a “first to file” rule. Given this, where do we
get the conclusion from that India follows a “first to file rule” when the
emphasis is clearly on the first person to truly invent the invention?

Merely because a person files an
application for a patent “claiming to be the true and first inventor”, does it
follow that his claim is irrebuttable? Since the requirements under Section 6 are
conjunctive and hence two-fold i.e. “true and first”, even if the person’s
claim of being the true inventor is in fact true, it is possible that he may
not be the first inventor. It is only his belief that he is the first
inventor because to the best of his knowledge no one seems to have published
the invention in public domain or has filed for a patent.

Be that as it may, his belief
could be misplaced, and it might be possible for another person to prove that
he (the other person) is not only the true inventor, but was also the first one
to invent the invention. If so, does the Act provide for a remedy which could
be invoked to prove “true and first inventorship”?

To the best my knowledge and
belief, there is no such provision in Section 25(1) or (2) because both refer
to an invention which has been “wrongfully obtained”, which is also dealt with
under Section 64(1)(c).

However, Section 64(1)(b) refers
to “entitlement to apply for a patent”, which in my opinion is a reference to
Section 6. If that be so, it follows that “true and first inventorship” is also
a legitimate ground that may raised under Section 64(1)(b).

The policy argument that could be
used to support this interpretation is that if the true and first inventor does
not wish to file for a patent, and instead wishes to throw it open for the public’s
consumption, why should another person be granted a patent merely because he is the “first
to file”? In other words, why should the public be saddled with the grant of a
patent, when the “true and first inventor” wishes to freely share his invention
with the public?

I am sure some of us might be
tempted to fall back on travaux preparatoires
i.e. legislative debates on amendments and the like, to support to the “first
to file” position. However, the rule of statutory interpretation is pretty
straightforward- Do Not Rely On External Material if there is no ambiguity in
the wording of the provision.

To my mind, Section 6 does not
exhibit or succumb to ambiguity. Its emphasis is clear- “true and first
inventorship”

9 comments:

Sai, I absolutely agree with you on this. The section is crystal clear and there is no ambiguity at all. I'm still clueless as to how the practice can trump the statutory provision. Perhaps, we should wait for a land-mark judgment wherein the judge will ask this simple question from perhaps the best Patent Counsel and he will not have any answer to this until judge declares India as first-to-invent system.

[I have shared my views with some hypothetical situations in such cases of conflict at "http://ipatents.blogspot.in/2012/01/is-india-really-first-to-file-system.html".]

Dear Ashwani,Thanks for the comment. I just went through your post, and I was wondering why didn't you deem it fit to mention the possibility of Section 64(1)(c) being used to revoke a patent? Awaiting your reply.

I believe that 64(1)(b) - 'person not entitled under the provisions of this Act' (which is referring to section 6)shall be available for revocation and not 64(1)(c) which deals with "wrongful obtainment" and travel beyond section 6. [Certainly the second inventor did not obtained the invention wrongfully]. Had 64(1)(c)[wrongful obtainment] be available for revocation, similar grounds under section 25(1)(a) and 25(2)(a) would also be available, but which I think is not the case. I think you are saying the same thing in your 4th and 5th last paras. Let me know if I'm missing out anything here.

Both of us are saying the same thing on "true and first inventorship". I was just wondering if there was a reason you did not make a specific reference to Section 64(1)(c) when dealing with the issue of "wrongfully obtaining" in one of your hypotheticals. Otherwise, both of us are exactly on the same page.